the madrid protocol key benefits risks and strategies l.
Download
Skip this Video
Loading SlideShow in 5 Seconds..
The Madrid Protocol: Key Benefits, Risks and Strategies PowerPoint Presentation
Download Presentation
The Madrid Protocol: Key Benefits, Risks and Strategies

Loading in 2 Seconds...

play fullscreen
1 / 16

The Madrid Protocol: Key Benefits, Risks and Strategies - PowerPoint PPT Presentation


  • 329 Views
  • Uploaded on

The Madrid Protocol: Key Benefits, Risks and Strategies. What is the Madrid Protocol?. International Treaty administered by WIPO Simple vehicle to obtain and maintain registration of trademarks in multiple jurisdictions through a single trademark office. What is the Madrid Protocol?.

loader
I am the owner, or an agent authorized to act on behalf of the owner, of the copyrighted work described.
capcha
Download Presentation

The Madrid Protocol: Key Benefits, Risks and Strategies


An Image/Link below is provided (as is) to download presentation

Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author.While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server.


- - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - -
Presentation Transcript
what is the madrid protocol
What is the Madrid Protocol?
  • International Treaty administered by WIPO
  • Simple vehicle to obtain and maintain registration of trademarks in multiple jurisdictions through a single trademark office
what is the madrid protocol3
What is the Madrid Protocol?

Allows for:

  • Simplified international filing system
  • Simplified renewals, assignments, and recordals
  • Three official languages
what is the madrid protocol4
What is The Madrid Protocol?

Members of the Madrid Protocol:

  • Over 80 contracting parties
  • Visit www.wipo.int for updated list
who may use the madrid protocol
Who May Use the Madrid Protocol?

Any person who:

  • Has a real and effective industrial or commercial establishment in a contracting party;
  • Is domiciled in a contracting party;
  • Is a national of a contracting state; or
  • Is a national of a state member of a contracting organization.
effects of the international registration
Effects of the International Registration
  • A bundle of national / regional rights
  • Initially with same list of goods / services
  • WIPO may object to wording of goods / services before IR is sent to national offices
  • Further objections / refusals possible on national level
advantages of the madrid protocol
Advantages of the Madrid Protocol
  • Centralized filing procedure
  • Potentially significant savings
advantages of the madrid protocol8
Advantages of the Madrid Protocol
  • Simplified filing requirements
  • Simplified maintenance
advantages of the madrid protocol9
Advantages of the Madrid Protocol
  • Transformation into national filings
risks of the madrid protocol
Risks of the Madrid Protocol

Central attack and mirror effect:

  • IR mirrors home application / registration
  • Attack on home mark within first 5 years of date of IR results in same limitation / cancellation of protection in countries designated under IR
  • IR does not become independent of home registration until after five years
risks of the madrid protocol11
Risks of the Madrid Protocol
  • Requirement for assistance of local agent if objections arise during prosecutionor in the context of opposition proceedingsmay reduce savings
searching strategies
Searching Strategies

Minimum recommended:

  • Full availability search – before filing in home country, todetermine if the trademark appears available for use and registration
  • Screening search – direct hit / identity search in each other country of interest
filing strategies
Filing Strategies
  • Coined expressions are preferable, as more likely to be inherently registrable
  • Descriptive / generic terms may result in objections and eliminate the cost saving advantage
filing strategies14
Filing Strategies
  • Consider waiting for home application to clear opposition period before filing international application (risk of central attack)
  • If applicant requires single brand in all designated countries,multiple potential marks are recommended because unlikely thatone mark will be accepted everywhere
filing strategies15
Filing Strategies
  • May not want to use European Community trademark application as home application (heightened risk of opposition)
  • US applicants may prefer national or regional route in order to expand scope of protection of mark (more limited base mark)
additional inta resources
Additional INTA Resources
  • For more information, visit Global Trademark Research on www.inta.org for:
    • Practitioner’s Guide to the Madrid Agreement and Madrid Protocol
    • Madrid Protocol and Community Trade Mark and the Madrid Protocol Comparison fact sheets
    • Madrid System Topic Portal